Appeal No. 95-4216
Application 08/035,076
carried his initial burden of pointing out where each element
of appellant’s composition is found in one reference. See In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39
(Fed. Cir. 1986). We therefore do not sustain the rejection
under 35 U.S.C. § 102(b).
Rejection under 35 U.S.C. § 103
The examiner argues that “[s]ince Cowfer teaches the
preparation of the catalyst by impregnating a copper solution
into a support, followed by mixing with an additional portion
of the bare support, it would have been obvious to one of
ordinary skill in the art to add any amount of any of the
three components, including selective addition of a solution
or suspension of a copper compound into the reactor while the
oxychlorination process is in progress, knowing well that it
will not adversely affect the reaction” (answer, page 5).
In order for a rejection under 35 U.S.C. § 103 to be
proper, the prior art must be such that it would have provided
one of ordinary skill in the art with both a motivation to
make appellants’ catalyst and a reasonable expectation of
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